adidas brought an application under section 120 of the Trade
Marks Act 1995 (Cth) seeking a declaration that Pacific Brands had
infringed its three-stripe trade mark by supplying certain footwear
which also displayed decorative stripes. It also sought an order to
restrain them permanently from doing so (adidas AG v Pacific Brands
Footwear Pty Limited  FCA 1205).
In preparing its evidence, adidas filed a Notice of Proposed
Survey which went to the issue of whether the mark in question was
deceptively similar to its trade mark. Pacific Brands applied for
orders that adidas not be permitted to use or rely upon a survey,
or the proposed survey, as evidence.
It argued that there was no necessity for survey evidence, and
that it was a waste of resources, since both questions to be tried
in the proceedings were questions of law and therefore, to be
determined by the judge (assisted by qualified expert
Pacific Brand's application for relief was dismissed.
Justice Robertson was not convinced that adidas should not be
allowed to use or rely upon any survey. The main
question was whether he was persuaded that it should not be
permitted to use or rely upon the proposed survey
The basis of Pacific Brand's case was that the question of
deceptive similarity was a matter for the judge alone and so any
evidence found by the survey would not be relevant and so would not
be admissible. However, Justice Robertson found that even if that
was the case, that of itself does not mean that the evidence is
going to be impermissible.
He stated that as a matter of case management, "the
question is whether it is sufficiently clear at this time that the
proposed survey could not produce relevant or admissible or
sufficiently probative evidence" (A & E Television Network
LLC v Discovery Communications Europe Limited  EWHC 1038
Justice Robertson held that this question and Pacific
Brand's concerns should have been dealt with under the
procedure set out in the Practice Note CM13, which sets out the
details required in a notice of proposed survey and requires the
parties to attempt to resolve any disagreement regarding those
details before bringing the matter before the court for the court
to determine its probative value.
The utility of survey evidence is still highly questionable.
However it is clear from this decision that the court expects the
parties to make every effort to reach agreement on the questions to
be asked and the protocol to be followed before bringing any
dispute about it to the court.
Nevertheless ultimately all that such evidence can do it to
assist the judge in making his or her decision. The results of the
survey are unlikely ever to be determinative.
Clayton Utz communications are intended to provide
commentary and general information. They should not be relied upon
as legal advice. Formal legal advice should be sought in particular
transactions or on matters of interest arising from this bulletin.
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